USPTO Patents Application 10511169

United States Patent and Trademark Office

UNITED STATES DEPARTMENT OF COMMERCE
I nihil Stall-, l'atint and Trademark Office

Address: COMMISSIONER FOR PATENTS

APPLICATION NO.

10/511,169

FILING DATE

I 0/1 4/200-1

FIRST NAMED INVENTOR

Mitsuo Hamada

ATTORNEY DOCKET NO. CONFIRMATION NO.

42798 7590 02/07/2008

FITCH, EVEN, TABIN & FLANNERY
P. O. BOX 18415
WASHINGTON, DC 20036

CR1.P1.AU, JONATHAN

PAPER NUMBER

DELIVERY MODE

Please find below and/or attached an Office communication concerning this application or proceeding.

The time period for reply, if any, is set in the attached communication.

PTOL-90A (Rev. 04/07)

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Application No.

10/511,169

Applicant(s)

HAMADA ET AL.

Examiner

Jonathan S. Crepeau

Art Unit

1795

- The MAILING DATE of this communication appears on the cover sheet with the correspondence address —
Period for Reply

A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 1 MONTH(S) OR THIRTY (30) DAYS,
WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.

- Extensions of time may be available under the provisions of 37 CFR 1 .136(a). In no event, however, may a reply be timely filed
after SIX (6) MONTHS from the mailing date of this communication.

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
earned patent term adjustment. See 37 CFR 1 .704(b).

Status

1 )KI Responsive to communication(s) filed on 14 October 2004 .
2a )□ This action is FINAL. 2b)D This action is non-final.

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 O.G. 213.

Disposition of Claims

4) ^ Claim(s) 1-17 is/are pending in the application.

4a) Of the above claim(s) is/are withdrawn from consideration.

5) D Claim(s) is/are allowed.

6) D Claim(s) is/are rejected.

7) 0 Claim(s) is/are objected to.

8) |EI Claim(s) 1-17 are subject to restriction and/or election requirement.

Application Papers

9) Q The specification is objected to by the Examiner.

10) D The drawing(s) filed on is/are: a)D accepted or b)D objected to by the Examiner.

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).

1 1) D The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.

Priority under 35 U.S.C. § 119

12) D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
a)D All b)D Some * c)D None of:

1 .□ Certified copies of the priority documents have been received.

20 Certified copies of the priority documents have been received in Application No. .

3.Q Copies of the certified copies of the priority documents have been received in this National Stage
application from the International Bureau (PCT Rule 17.2(a)).
* See the attached detailed Office action for a list of the certified copies not received.

Attach ment(s)

1) D Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-41 3)

2) □ Notice of Draftsperson's Patent Drawing Review (PTO-948) Paper No(s)/Mail Date. .

3) □ Information Disclosure Statement(s) (PTO/SB/08) 5 ) □ Notice of Informal Patent Application

Paper No(s)/Mail Date . 6) □ Other: .

PTOL-T26 d (Rev e 08-06r

Office Action Summary

Part of Paper No./Mail Date 20080129

Application/Control Number: 1 0/5 1 1 , 1 69
Art Unit: 1795

Page 2

DETAILED ACTION

Election/Restrictions

1 . Restriction is required under 35 U.S.C. 121 and 372.

This application contains the following inventions or groups of inventions which are not
so linked as to form a single general inventive concept under PCT Rule 13.1.

In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a
single invention to which the claims must be restricted.

Group I, claim(s) 1-7, drawn to a carbon fiber paper.

Group II, claim(s) 8-17, drawn to a porous carbon electrode substrate.

2. The inventions listed as Groups I-II do not relate to a single general inventive concept
under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special
technical features for the following reasons: Each of Groups I and II recites the subject matter of
claim 1. However, this subject matter is known from prior art references JP 2000-331892 and JP
2000-36433, according to the citations on the International Search Report. Accordingly, the
inventions are not linked by a special technical feature that makes a contribution over the prior
art, and a lack of unity between the inventions exists.

3. Applicant is advised that the reply to this requirement to be complete must include (i) an
election of a species or invention to be examined even though the requirement may be traversed
(37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.

Application/Control Number: 1 0/5 1 1 , 1 69
Art Unit: 1795

Page 3

The election of an invention or species may be made with or without traverse. To
preserve a right to petition, the election must be made with traverse. If the reply does not
distinctly and specifically point out supposed errors in the restriction requirement, the election
shall be treated as an election without traverse.

4. Applicant is reminded that upon the cancellation of claims to a non-elected invention, the
inventorship must be amended in compliance with 37 CFR 1 .48(b) if one or more of the
currently named inventors is no longer an inventor of at least one claim remaining in the
application. Any amendment of inventorship must be accompanied by a request under 37 CFR
1.48(b) and by the fee required under 37 CFR 1.1 7(i).

Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Jonathan S. Crepeau whose telephone number is (571) 272-1299.
The examiner can normally be reached on Monday-Friday, 9:30 AM - 6:00 PM.

If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Patrick Ryan can be reached on (571) 272-1292. The fax phone number for the
organization where this application or proceeding is assigned is 571-273-8300.

Application/Control Number: 1 0/5 1 1 , 1 69
Art Unit: 1795

Page 4

Information regarding the status of an application may be obtained from the Patent
Application Information Retrieval (PAIR) system. Status information for published applications
may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
applications is available through Private PAIR only. For more information about the PAIR
system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR
system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would
like assistance from a USPTO Customer Service Representative or access to the automated
information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.

/Jonathan Crepeau/

Primary Examiner, Art Unit 1795